Preview
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
Exhibit 2
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
LICENSING ADMINISTRATOR AGREEMENT REGARDING THE HEVC
STANDARD
12"'
This Agreement is made this day of May, 2014, by and among MPEG LA, L.L.C., a limited
liability company, having a principal place of business in Denver, Colorado, U.S.A. (the
"Licensing Administrator"), on the one hand,
AND EACH OF
Apple Inc., a corporation of California, U.S.A., having a principal place of business in Cupertino,
California, U.S.A. ("Apple"); Electronics and Telecommunications Research Institute (ETRI), a
corporation of Korea, having a principal place of business in Daejeon, Korea ("ETRI"); Fujitsu
Limited, a corporation of Japan, having a principal place of business in Kawasaki, Japan
("Fujitsu"); Hitachi Maxell, Ltd., a corporation of Japan, having a principal place of business in
Osaka, Japan ("Hitachi"); HUMAX Holdings Co., Ltd., a corporation of Korea, having a
principal place of business in Seongnam-si, Korea ("HUMAX Holdings"); Intellectual Discovery
Co. LTD., a corporation of Korea, having a principal place of business in Seoul, Korea
("Intellectual Discovery"); JVC KENWOOD Corporation, a corporation of Japan, having a
principal place of business in Yokohama, Japan ("JVC KENWOOD"); Korea Advanced Institute
of Science and Technology, a corporation of Korea, having a principal place of business in
Daejeon, Korea ("KAIST"); Korea Broadcasting System, a corporation of Korea, having a
principal place of business in Seoul, Korea ("KBS"); KT Corp, a corporation of Korea, having a
principal place of business in Seongnam, Korea ("KT"); M&K Holdings Inc., a corporation of
Korea, having a principal place of business in Seoul, Korea ("M&K"); NEC Corporation, a
corporation of Japan, having a principal place of business in Tokyo, Japan ("NEC");
NEWRACOM, Inc., a corporation of Delaware, U.S.A., having a principal place of business in
Irvine, California, U.S.A. ("NEWRACOM"); Nippon Hoso Kyokai, a corporation of Japan,
having a principal place of business in Tokyo, Japan ("NHK"); Nippon Telegraph and Telephone
Corporation, a corporation of Japan, having a principal place of business in Tokyo, Japan
("NTT"); NTT DOCOMO, INC., a corporation of Japan, having a principal place of business in
Tokyo, Japan ("NTT DOCOMO"); Orange SA, a corporation of France, having a principal place
of business in Paris, France ("Orange"); Samsung Electronics Co., Ltd., a corporation of Korea,
having a principal place of business in Seoul, Korea ("Samsung"); Siemens Corp., a corporation
of Delaware, U.S.A., having a principal place of business in Washington D.C., U.S.A.
("Siemens"); SK Telecom, a corporation of Korea, having a principal place of business in Seoul,
Korea ("SK Telecom"); Tagivan II, LLC, a limited liability company of Delaware, U.S.A.,
having a principal place of business in Chevy Chase, Maryland, US.A. ("Tagivan II"); The
Trustees of Columbia University in the City of New York, a not-for-profit corporation of New
York, U.S.A., having a principal place of business in New York City, New York, U.S.A.
("Columbia"); and Vidyo, Inc. a corporation of Delaware, U.S.A., having a principal place of
business in Hackensack, New Jersey, U.S.A. ("Vidyo");
NOW, THEREFORE, in reliance upon the representations, warranties and agreements made
herein and in consideration of the premises and mutual covenants and agreements contained
herein and for other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereto, intending to be legally bound, hereby agree as follows:
[1]
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
1. DEFINITIONS
1.1 Administrative Committee - shall mean the Administrative Committee of the
Licensors constituted as set forth in, and acting in accordance with, the Agreement
Among Licensors.
1.2 Affiliate - shall mean a Legal which now or hereinafter or
Entity directly indirectly
controls, is controlled by, or is under common control with a party. For purposes of
this Section 1.2, control shall mean direct or beneficial ownership of more than fifty
percent (50%) of the outstanding shares representing the right to vote for directors or
other managing officers of such Legal Entity, or the power to directly or indirectly
instruct, appoint, or remove the party or parties who have the right to make
decisions for such entity. An entity shall be deemed an Affiliate only so long as
"control"
such exists.
1.3 Agreement Licensors - shall mean the Agreement Licensors
Among Among
Regarding the HEVC Standard, dated as of May 12, 2014 entered into by and
between each of the Licensors.
1.4 End User - shall mean natural person or which
any entity orders, sends, purchases,
retrieves, receives or is specifically sent an HEVC Product for their or its use,
whether alone or in combination with any other product, and not for re-Sale
1.5 Gross Collections - shall mean the total amount received the
by Licensing
Administrator as royalty payments pursuant to all HEVC Patent Portfolio Licenses.
Gross Collections shall not include, however, any sums paid out to the Licensing
Administrator under this Agreement or for any withholding taxes, sales or excise
taxes imposed by any duly constituted governmental authority, and Gross
Collections shall be reduced by the applicable amount of any refund to Licensees,
if any, made under any HEVC Patent Portfolio Licenses.
1.6 HEVC Codec - shall mean software and/or hardware that comprises one HEVC
Decoder and/or one HEVC Encoder. For avoidance of doubt, software or
hardware which includes more than one HEVC Decoder or more than one HEVC
Encoder shall be deemed to include more than one HEVC Codec.
1.7 HEVC - shall mean software and/or hardware that is capable of
Decoder(s)
converting a bitstream substantially in accordance with the HEVC Standard to
video samples.
1.8 HEVC - shall mean software and/or hardware that is capable of
Encoder(s)
converting video samples to a bitstream substantially in accordance with the
HEVC Standard.
1.9 HEVC Essential Patent - shall mean and all but such in
any claims, only claims,
a Patent which are necessarily infringed in connection with the use or
[2]
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
implementation of the HEVC Standardunder the laws of the country which issued
or published the Patent.
1.10 HEVC Patent Portfolio - shall mean the portfolio of HEVC Essential Patents
which are initially identified in Attachment 1 to the HEVC Patent Portfolio
License, which portfolio may be supplemented or reduced from time to time in
accordance with the provisions of the HEVC Patent Portfolio License.
1.11 HEVC Patent Portfolio License - shall mean a standard nonexclusive
worldwide,
sublicense under all HEVC Patent Portfolio Patents, which sublicense shall
initially be identical in form to the sample sublicense attached hereto as
Attachment 1 and as such sublicense shall from time to time be amended as set
forth in the Agreement Among Licensors.
1.12 HEVC Patent Portfolio Patent - shall mean an HEVC Essential Patent under
which a Party has the right to grant a license or sublicense to a third party (without
payment to any other party which is not an Affiliate) with the right of such third
party to grant sublicenses, and which is included in the HEVC Patent Portfolio.
1.13 HEVC Product - shall mean an HEVC HEVC or HEVC
Decoder, Encoder,
Codec in whatever form or implementation, including software and/or hardware,
that is:
(a) contained in a product (such as a mobile phone, tablet, television, set-top
box, computer, digital/personal video recorder, optical disc player or
recorder, game console, software, etc.) Sold to an End User or offered for
Sale to an End User, or
(b) software Sold to an End User or offered for Sale to an End User that is
capable of being installed in a product (such as a mobile phone, tablet,
television, set-top box, computer, digital/personal videorecorder, optical disc
player or recorder, game console, software, etc.),
which product, or software capable of being installed in a product, bears the brand
name that Licensee owns or otherwise has the right (or apparent right) to use at
Licensee's discretion or bearing no brandname if the decision to do so is at the
discretion of Licensee. An HEVC Product includes only the software and/or
hardware that is substantially in accordance with the HEVC Standard and excludes
any other portion or segment of a product that is not substantially in accordance
with the HEVC Standard.
1.14 HEVC Product - shall mean an HEVC Product for which a is
Royalty royalty
payable to the Licensing Administrator under the HEVC Patent Portfolio License.
1.15 HEVC Standard - shall mean the visual standard defined in Version 1 of
ISO/IEC 23008-2 MPEG-H Part 2 and ITU-T Recommendation H.265.
As authorized in accordance with Section 6.3 of the Agreement Among Licensors,
the definition of HEVC Standard shall be considered amended for all purposes
[3]
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
upon the posting of a new definition to the website of the Licensing Administrator,
http://www.mpegla.com ("Amended Definition"); provided, however, that no
Amended Definition shall reduce the scope of any definition of the HEVC
Standard immediately prior to the posting of the Amended Definition. Section
12.1 herein shall not apply to any Amended Definition.
1.16 HEVC Video - shall mean video or still picture encoded in
substantially
accordance with the HEVC Standard.
1.17 Legal - shall mean a limited
Entity corporation, liability company, partnership,
individual or other entity recognized by state, provincial or national law as having
the power to contract and to sue or be sued.
1.18 License - shall mean the license granted each Licensor to the
by Licensing
Administrator pursuant to the Agreement Among Licensors.
1.19 Licensee - shall mean Person that has entered into an HEVC Patent Portfolio
any
License with the Licensing Administrator.
1.20 Administrator - shall mean MPEG L.L.C. ("MPEG or
Licensing LA, LA"), any
successor thereof appointed pursuant to Section 3.4 of the Agreement Among
Licensors.
1.21 Licensors - shall mean those Parties which have
(individually Licensor)
executed the Agreement Among Licensors made as of May 12, 2014. A list of
such Parties shall be made available and kept current by the Licensing
Administrator.
1.22 Manager - shall mean Lawrence A. Horn or successor chief executive officer
any
of MPEG LA or any successor manager of the Licensing Administrator.
1.23 Original Parties - shall mean parties that sign the HEVC documents
licensing
prior to launch of the HEVC Patent Portfolio License including the following
companies: Apple, ETRI, Fujitsu, Hitachi, HUMAX Holdings, Intellectual
Discovery, JVC KENWOOD, KAIST, KBS, KT, M&K, NEC, NEWRACOM,
NHK, NTT, NTT DOCOMO, Orange, Samsung, Siemens, SK Telecom, Tagivan
II,Columbia, and Vidyo.
1.24 Parties - shall mean the Original Parties unless this
(individually Party)
Agreement expires or is terminated as to any of the foregoing pursuant to Section
11.1, 11.2 or 11.4 herein and shall include any other Legal Entity or Person that
may be added as a Licensor by amendment pursuant to Article 9 herein, or by an
assignment of this Agreement pursuant to Section 12.2 herein or shall mean any
person or entity which signs this Agreement.
1.25 Patent - shall mean issued patent
any (including reexaminations, reissues,
continuations, divisionals and continuations-in-part).
[4]
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
1.26 Patent - shall mean independent Patent retained to
Consultant(s) expert(s)
determine whether a Patent is an HEVC Essential Patent.
1.27 Person - shall mean limited or general
any individual, corporation, partnership,
company, limited liability company, joint venture, association, trust, estate,
unincorporated organization, or any other entity having the power to sue or be sued
under any state, provincial or national law.
1.28 Sale - shall mean (regardless of whether for
(Sell) (Sold) (Seller) compensation)
any sale, rental, lease, license or other form of distribution by Licensee of an
HEVC Product, either directly or through a chain of distribution, to an End User.
A Sale shall be deemed to take place in the country in which title to the HEVC
Product passes to an End User or, at the election of the Licensing Administrator, in
the country in which the HEVC Product is received by an End User.
Notwithstanding anything in this Section 1.28 to the contrary, in the case where the
HEVC Product is software transmitted to an End User by download, the country of
Sale shall be the country in which the End User is located or at the election of the
Licensing Administrator, the country from which the HEVC Product is initially
transmitted.
1.29 Services - shall mean the functions and covenants to be
undertakings, tasks,
performed by the Licensing Administrator pursuant to Article 3 of this Agreement.
2. APPOINTMENT OF LICENSING ADMINISTRATOR; ACCEPTANCE
2.1 Appointment and Selection of the Licensing Administrator. Each of the
Licensors hereby appoints and selects MPEG LA, L.L.C. to be the Licensing
Administrator under this Agreement, to, among other things, perform the Services
during the term of this Agreement and in accordance with the terms and conditions
of this Agreement.
2.2 Acceptance of the Licensing Administrator. MPEG LA, L.L.C. hereby accepts
the appointment and selection as Licensing Administrator under this Agreement,
to, among other things, perform the Services during the term of this Agreement
and in accordance with the terms and conditions of this Agreement.
3. DUTIES AND OBLIGATIONS OF THE LICENSING ADMINISTRATOR
3.1 Identification of Potential Licensees. The Licensing Administrator shall use its
commercially reasonable best efforts to identify Persons who are either
implementing the HEVC Standard or who may potentially implement the HEVC
Standard and any other Persons that may be a potential Licensee of an HEVC
Patent Portfolio License. Such efforts to identify potential Licensees shall
include:
3.1.1 Continuous monitoring of key segments of the industries utilizing digital
visual data compression, including, but not limited to, broadcast
[5]
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
television, cable and wireless cable television, direct broadcast satellite,
internet broadcasting, mobile communications, playback and recording
devices, personal computers, video teleconferencing equipment, encoding,
multiplexing and server equipment;
3.1.2 Presenting periodic seminars and attending relevant trade shows in an
effort to publicize, educate and inform potential Licensees about the
purposes and scope of an HEVC Patent Portfolio License and the
Licensing Administrator's ability to grant an HEVC Patent Portfolio
License;
3.1.3 Such other commercially reasonable best efforts as it shall determine to
identify potential Licensees; and
3.1.4 Informing each potential Licensee that licenses or sublicenses to
individual HEVC Essential Patents are available from respective Patent
holders for rights to make, use and sell products under the HEVC Patent
Portfolio Patents.
3.2 Granting of HEVC Patent Portfolio Licenses.
3.2.1 The Licensing Administrator shall have the authority, consistent with its
obligation to use commercially reasonable best efforts, to encourage
potential Licensees to enter into an HEVC Patent Portfolio License with
the Licensing Administrator. Licensors hereby also grant to the Licensing
Administrator the authority set out in Section 2.3 of the Agreement
Among Licensors with respect to Licensees. The Licensing Administrator
acknowledges that it is not the beneficial owner of the HEVC Patent
Portfolio Patents. This grant of authority in no way diminishes the right of
each Licensor to separately offer licenses or sublicenses under its HEVC
Essential Patents. Each Party hereto represents that the HEVC Patent
Portfolio shall include (or be deemed to include for purposes of the HEVC
Patent Portfolio License) all HEVC Essential Patents licensable or
sublicensable by each Party without payment to any third party which is
not an Affiliate.
3.2.2 Subject to Sections 3.7 and 3.8, the Licensing Administrator shall be
required to use commercially reasonable best efforts to grant an HEVC
Patent Portfolio License to each and every potential qualified Licensee
who requests an HEVC Patent Portfolio License and shall not discriminate
against potential Licensees. The Licensors acknowledge and agree that in
granting HEVC Patent Portfolio Licenses, the Licensing Administrator
shall use its judgment with regard to decisions relating to the
creditworthiness of a potential Licensee and whether a potential Licensee
should be subject to more overall financial requirements than those
contained in the HEVC Patent Portfolio License form (e.g., requiring a
[6]
FILED: NEW YORK COUNTY CLERK 05/16/2022 06:19 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
letter of credit or other security relating to payment obligations of a
potential Licensee).
3.2.3 Without the written consent of the Administrative Committee pursuant to
the Agreement Among Licensors, the Licensing Administrator shall not
grant or enter into a specific HEVC Patent Portfolio License on a form
that is materially different from the form of the HEVC Patent Portfolio
License in Attachment 1.
3.2.4 The ability of the Licensing Administrator to grant further sublicenses
shall automatically terminate and expire upon the expiration or
termination of this Agreement.
3.3 Compliance; Collection of Payments.
3.3.1 The Licensing Administrator shall use commercially reasonable best
efforts to collect all royalty and other payments required to be made by
Licensees under the HEVC Patent Portfolio Licenses (including late
payments). Such effort shall, at a minimum, consist of collection of
royalties and review of all periodic royalty reports and statements,
verification of the calculation of the royalties made in such statements and
verification that such statements have been reviewed by proper
representatives of each Licensee as required by the terms of the applicable
HEVC Patent Portfolio License. The Licensing Administrator agrees to
make copies of these reports available to the auditors conducting an audit
as set forth in Section 6.5 of this Agreement.
3.3.2 In addition to collection of royalties, the Licensing Administrator shall
have sole authority, consistent with its obligation to use commercially
reasonable best efforts, to assure that each Licensee is materially
complying with the terms and conditions of the applicable HEVC Patent
Portfolio License. Such efforts may include an accounting of the royalty
records of a Licensee and such other contract compliance procedures as
the Licensing Administrator in its discretion reasonably deems necessary
or appropriate in the circumstances. The Licensors agree that the
Licensing Administrator will be reimbursed for the expenses of enforcing
compliance with the HEVC Patent Portfolio Licenses pursuant to the
terms of the Agreement Among Licensors.
3.4 Cooperation with Licensors Relating to Enforcement of HEVC Essential
Patents.
3.4.1 The Licensing Administrator acknowledges and agrees that the License
does not provide the Licensing Administrator with the right to bring a
claim for infringement of any Patent licensed or sublicensed thereunder in
a lawsuit or other proceeding against any party in any country.
[7]
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NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
3.4.2 Notwithstanding Section 3.4.1, the Licensing Administrator agrees to fully
cooperate with each Licensor bringing a Patent infringement action
against those parties specified in Sections 2.8, 2.9, 2.10, or 2.11 of the
Agreement Among Licensors that such Licensor reasonably believes is
infringing at least one of their Patents in the HEVC Patent Portfolio. The
reasonable expenses incurred by the Licensing Administrator in
cooperating with such Licensor, at Licensor's request, shall be paid by
such Licensor.
3.5 Distribution of Licensing Revenues. Subject to Sections 2.12 and 5.2.1 of the
Agreement Among Licensors, the Licensing Administrator agrees to remit to each
Licensor the portion of the HEVC Patent Portfolio License royalties payable to
such Licensor as set forth in Article 5 of the Agreement Among Licensors,
Licensors being the effective beneficial owners of all royalties collected by the
Licensing Administrator. The Licensors acknowledge and agree that the
Licensing Administrator is not a guarantor of royalties payable under HEVC
Patent Portfolio Licenses but is responsible to remit royalties duly received
(subject to withholding tax as required by applicable law or regulations) pursuant
to the HEVC Patent Portfolio License as set forth in Section 5 of the Agreement
Among Licensors.
3.6 Mitigation of Withholding Taxes. The Licensing Administrator agrees to use
commercially reasonable efforts to recommend methods to mitigate the applicable
withholding taxes on royalties required by applicable law or regulation to be
withheld from the royalty payments and paid by the Licensees and to maximize
the tax credits available to the Licensors.
3.7 Deletion of Patents From the HEVC Patent Portfolio. The Licensing
Administrator shall delete Patents from the HEVC Patent Portfolio in accordance
with the terms of the Agreement Among Licensors, and shall give notice to all
Licensees of such deletion.
3.8 Partial Termination, Exclusion or Revocation Rights. The Licensing
Administrator acknowledges its obligation to follow the written instructions of
Licensors which may be given pursuant to Sections 2.8, 2.9, 2.10, or 2.11 of the
Agreement Among Licensors, provided such instructions are permitted by the
terms of the relevant HEVC Patent Portfolio License. Licensors acknowledge
their obligation to give reasonable notice of such instructions.
3.9 Maximization of Royalty Income. The Licensing Administrator shall use
commercially reasonable best efforts to maximize the royalties generated from the
HEVC Patent Portfolio Licenses.
3.10 Periodic Reports. The Licensing Administrator shall provide the Licensors with
reports at each meeting of the Administrative Committee (as provided in the
Agreement Among Licensors) summarizing the Licensing Administrator's actions
in complying with this Agreement.
[8]
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NYSCEF DOC. NO. 3 RECEIVED NYSCEF: 05/16/2022
HEVC LICENSING ADMINISTRATOR AGREEMENT (cont'd)
3.11 Business Plan. The Licensing Administrator shall prepare a business plan and
present such plan annually to the Administrative Committee. The business plan
shall include business and financial planning information that is normally
included in a business plan provided by the Licensing Administrator, and shall
further include a listof potential Licensees, a list of Licensees with whom the
Licensing Administrator is currently negotiating, and a list of new Licensees
added in the preceding year and a target number of new Licensees to be added
during the upcoming year. The Licensing Administrator shall use commercially
reasonable best efforts to achieve any goals specified in the business plan.
3.12 Cooperation With Licensors. The Licensing Administrator agrees to use
commercially reasonable best efforts to fully and in good faith cooperate with
each Licensor in connection with the subject matter of this Agreement and to
enable each Licensor to carry out itsobligations under this Agreement.
3.13 Interest in Licensees. The Licensing Administrator shall have no substantial
interest in, or become an Affiliate of, any potential or existing Licensee.
3.14 Enforcement of HEVC Patent Portfolio Licenses. Consistent with its
obligation under Section 3.3, the Licensing Administrator shall have sole
authority to enforce HEVC Patent Portfolio Licenses and/or terminate any HEVC
Patent Portfolio Licenses as to any breaching Licensee. However, the Licensing
Administrator shall notify the Administrative Committee in writing thirty (30)
days in advance of terminating any HEVC Patent Portfolio License or initiating
any enforcement action against a Licensee (collectively, "Contract Enforcement
Action"). Such Contract Enforcement Action shall be considered by the
Administrative Committee and funded in accordance with the terms of the
Agreement Among Licensors.
3.15 Auditing of HEVC Patent Portfolio Licenses. Consistent with its obligation
under Section 3.3, the Licensing Administrator shall have sole authority,
consistent with its obligation to use commercially reasonable best efforts, to
conduct audits of Licensees when such audits are reasonably deemed appropriate
by the Licensing Administrator.
4. DUTIES AND OBLIGATIONS OF THE LICENSORS
4.1 Cooperation with Licensing Administrator. In addition to itsother obligations
and covenants set forth herein, each of the Licensors agrees to use commercially
reasonable best efforts to fully and in good faith cooperate with the Licensing
Administrator in connection with the subject matter of this Agreement and to
enable the Licensing Administrator to carry out its obligations under this
Agreement.
4.2 Am